Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
DETAILED ACTION
Claims 1-147 have been cancelled; Claims 148-164 remain for examination, wherein claim 148 is an independent claim. It is acknowledged of the receipt of the Applicant’s “132 Declaration” filed on 3/31/2026. There is no amendment since last office action dated 10/07/2026.
Priority
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in PCT IB2011001725 on 07/26/2011. The certified copy of the PCTIB2011001725 is recorded in parent case 14/235,420.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 148-162 and 164 is/are rejected under 35 U.S.C. 103 as being unpatentable over Canourgues et al (WO2007/125182, corresponding to US 8,614,008, listed in IDS filed on 12/21/2023, thereafter US’008) in view of Takahashi et al (EP 0502 390 A1, listed in IDS filed on 12/21/2023, thereafter EP’390).
US’008 in view of EP’390 is applied to the instant claims 148-162 and 164 for the same reason as stated in the previous office action dated 10/7/2025.
Claim 163 is/are rejected under 35 U.S.C. 103 as being unpatentable over US’008 in view of EP’390, and further in view of Anderl et al (US 4,203, 021, listed in IDS filed on 12/21/2023, thereafter US’021).
US’008 in view of EP’390 and US’021 is applied to the instant claims 163 for the same reason as stated in the previous office action dated 10/7/2025.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 148-164 are rejected on the ground of nonstatutory obviousness type double patenting as being unpatentable over Claims 1-11 of co-pending application No. 14/235420 (updated as US patent 10,919,117 B2, listed in IDS filed on 12/21/2023).
Claims 1-11 of co-pending application No. 14/235420 (updated as US patent 10,919,117 B2, listed in IDS filed on 12/21/2023) is applied to the instant claims 148-164 for the same reason as stated in the previous office action dated 10/7/2025.
Notes: Takahashi et al (US 5,296,677) corresponding to EP’390. Which has been recorded as a reference.
Response to Arguments
Applicant’s arguments to the art rejection to Claims 148-164 have been considered but they are not persuasive.
Regarding the Applicant’s “132 Declaration” filed on 3/31/2026, which has been considered but it is insufficiently overcome the rejections as sated above. In the “132 Declaration”, following arguments has been listed:
1, the example #16 in table 3 of EP’390 does not specify the claimed weld material and there is no disclosure in cited prior art(s) to indicate amount in the welded zone C. it is impossible that the resulting weld material entirely has the same composition as the filled material. Therefore, the cited prior art(s) does not specify the claimed carbon ratio as claimed in the instant claim 148.
2, the higher hardness in weld zone does not mean the carbon contain is higher.
3, a person of ordinary skill in the art at time of invention would had no apparent reason to modify US’008 in view of EP’390.
4, the entire premise of US’008 is that present of ferrite forming exogenous metal elements in the coating is problematic for welding, while the filler material of EP’390 all include exogenous metals. The cited prior art(s) is not combinable.
5, Fig.5, 6, and 9 provides data to show criticality of the carbon ratio in term of properties (including TS, local fracture, and Kic) of the welded materials.
6, welding speed is also related to the proportion of filler material.
In response,
Regarding the argument 1, the comparison between the Fig.3 of the instant invention and Fig.1 of EP’390. Same welding process with filler to form the weld zone.
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It is noted that thee instant claim 148 indicates no any detail alloy compositions for the base alloy and filler material. The limitation of “at least a portion of the weld zone and the carbon content of the substrate of the first or second sheet, which has the highest carbon content (Cmax) is between 1.27 and 1.59” clearly indicates not entire weld zone carbon over to carbon in substrate. The Applicant does not provide any evidence to show the filler C composition is not part of the weld zone.
Regarding the argument 2, Fig.3 of EP’390 indicates the higher hardness in weld zone compared substrate material, which reads on the claimed limitation in the instant claim 164.
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Regarding the arguments 3-4, Firstly, as pointed out in the rejection for the instant claims in the previous office action dated 10/7/2025, it would have been obvious to one of ordinary skill in the art at the time the invention was made to apply welding filler wire with higher carbon content compared to the steel sheet as demonstrated by EP' 390 in the process of US'008 in order to obtain the desired hardness in the welded zone (examples and Fig. 3-4 of EP'390); Secondly, US'008 teaches a welded steel part by laser butt welding to join the welded blanks (Abstract, examples and claims of US'008). It is noted that US’008 does not exclude filler welding technique in the welding process. Finally, it is noted that the Applicant’s arguments are against the combined prior arts individually, one should not show non-obviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). In the instant case, US’008 in view of EP’390 is applied to the rejection of claims 148-162 and 164, and US’021 is further cited for the rejection of claim 163. The reason and motivation for the combination can further refer to the rejection for in the previous office action dated 10/7/2025.
Regarding the argument 5, the argued properties, for example: TS, local fracture, and Kic are not included in the instant claims. These properties fully depended on the alloy composition ranges and welded structure. There is no limitation for the including exogenous metal elements or not.
Regarding the argument 6, welding speed is not included in the instant claims. There is no limitation to indicates relationship between welding speed and the claimed structures.
The Applicant’s arguments have been summarized as following:
1, Similar arguments has been summarized as above.
.2, ODP rejection to be hold for allowable subject matter.
In response,
Regarding the argument 1, please refer to the response to the arguments for the Applicant’s “132 Declaration” filed on 3/31/2026 above.
Regarding the argument 2, proper “Terminal disclaimer” can overcome the rejection of Claims 148-164 on the ground of nonstatutory obviousness type double patenting as being unpatentable over Claims 1-11 of co-pending application No. 14/235420 (updated as US patent 10,919,117 B2, listed in IDS filed on 12/21/2023).
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIE YANG whose telephone number is (571)270-1884. The examiner can normally be reached on IFP.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jonathan J Johnson can be reached on 571-272-1177. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JIE YANG/Primary Examiner, Art Unit 1734
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